How do you respond to a USPTO likelihood-of-confusion refusal?

A refusal under Section 2(d) of the Trademark Act means the examining attorney found a registered mark and concluded that buyers would likely think your goods or services and the registrant's come from the same source. It is not the end of the application. This page explains what the examiner weighs, the deadlines, and the realistic ways to respond. For how office actions fit into the process generally, see our guide to USPTO office actions. Our main copyright and trademark law page covers registration and enforcement more broadly.

How a likelihood-of-confusion refusal is handled, step by step

1. Read the office action. Note the issue date, the deadline it states, whether it is nonfinal or final, and every registration cited against you (37 CFR 2.62(a)).
2. Pull each cited registration. In TSDR, check its owner, goods or services, filing basis, age and maintenance filings.
3. Choose a strategy. Argue, narrow your description, obtain consent, challenge the cited registration, or a mix.
4. Extend if needed. For a Section 1 or 44 application, one three-month extension is available for $125 if requested on or before the deadline (37 CFR 2.62(a)(2)).
5. File through TEAS. Responses and extension requests must be filed through TEAS; those sent by email or fax receive no date of receipt (37 CFR 2.62(c)).
6. Examiner's review. The examining attorney approves the mark for publication, issues a new nonfinal action if your response raises a new problem, or makes the refusal final.
7. After a final refusal. File a request for reconsideration, an appeal to the Trademark Trial and Appeal Board, or both, within the response period (37 CFR 2.63(b), 2.142(a)).

What does the examining attorney actually compare?

The statute bars registration of a mark that so resembles a registered mark as to be likely to cause confusion, mistake or deception when used on the applicant's goods or services (15 U.S.C. 1052(d)). The USPTO's examination manual stresses that the question is not whether people would confuse the two marks themselves, but whether they would wrongly believe the goods or services come from the same source.

The analysis uses the du Pont factors. Two carry weight in every case: how similar the marks are in appearance, sound, meaning and overall commercial impression, and how related the goods or services are as described in the application and the registration. Others count when there is evidence on them, including trade channels, how carefully buyers purchase, the number of similar marks in use for similar goods, and any consent agreement between the parties (TMEP 1207.01).

One point catches many applicants off guard. The comparison is based on the goods and services as written, not on how either business actually operates. If the cited registration describes its goods broadly and without limits, the USPTO presumes it covers all goods of that type, sold in all normal channels to all usual buyers (TMEP 1207.01(a)(iii)). Real-world differences help only if they show up in the descriptions or in evidence the examiner can weigh.

How long do you have to respond?

The deadline is printed in the office action, and that date controls. A response that misses it, including any granted extension, leaves the application abandoned (37 CFR 2.65(a)).

If the deadline has already passed, see what to do if you missed a USPTO office action deadline.

What are the ways to overcome the refusal?

Argue that confusion is not likely. Good arguments are specific: differences in sound, meaning or overall impression when the marks are viewed as wholes, goods that are not related in the way the examiner assumed, buyers who purchase with care, or a crowded field of similar marks in use for similar goods. Evidence matters, because the manual tells examiners to weigh factors like these when there is pertinent evidence in the record (TMEP 1207.01).

Narrow the goods or services. An applicant may amend the description to clarify or limit it, but not to broaden it (37 CFR 2.71(a)). Removing the overlapping items can resolve a refusal outright. A narrowing that only adds a label, without changing the nature of the goods or how they are sold, may not be enough when the goods are otherwise identical (TMEP 1207.01(a)(iii)).

Get consent from the other owner. A consent agreement is one factor the examiner must weigh, and the examiner may not ask you for one. The manual says a bare statement that the owner consents carries less weight than an agreement that explains why confusion is unlikely and what both sides will do to avoid it, such as separate trade channels, restricted fields of use and cooperation if confusion arises (TMEP 1207.01(d)(viii)). Our page on trademark coexistence and consent agreements walks through the five factors and a drafting checklist.

Deal with the cited registration itself. Check its status first. If the owner missed a maintenance deadline, the USPTO waits until about 10 days after the six-month grace period ends before its records show the registration as cancelled (TMEP 716.02(e)). If the cited mark has never been used, or was abandoned, a petition to cancel or a USPTO expungement or reexamination proceeding may remove the obstacle (15 U.S.C. 1064, 1066a, 1066b). Bringing the cited registration and your application under the same owner by assignment is another route the manual recognizes (TMEP 1201.07(b)). Our page on challenging someone else's trademark filing sets out those tools and their deadlines.

Wait out an earlier application. If the conflict is with a pending application filed earlier, that application goes first (TMEP 1208.01), and yours can be suspended until it is decided. If the earlier application is later abandoned, you can ask the examiner to lift the suspension.

What if the refusal is made final?

A final office action leaves three paths: a request for reconsideration that tries again to overcome the refusal, an appeal to the Trademark Trial and Appeal Board, or a request for the extension of time (37 CFR 2.63(b)). Filing a request for reconsideration does not pause the time to appeal, so an appeal may need to be filed while reconsideration is still pending. An ex parte appeal to the Board costs $225 per class, with a further $200 per class for the appeal brief. If reconsideration fails and no appeal or petition is on file, the application is abandoned (37 CFR 2.63(b)(4)).

The appeal brief is due within 60 days from the date of appeal, the examining attorney then has 60 days to answer, and you may reply within 20 days (37 CFR 2.142(b)(1)). The record should be complete before you appeal; new evidence after that requires asking the Board to suspend the appeal and send the application back to the examiner (37 CFR 2.142(d)).

What if you already missed the deadline?

An application abandoned for a missed response can sometimes be revived. The petition must be filed within two months of the notice of abandonment, must state that the delay was unintentional, and must include the response itself; the USPTO petition fee is $250 (37 CFR 2.66). When the abandoned action had a three-month response period, the petition also carries the $125 extension fee unless you say you never received the office action.

What changes the answer

• Close calls. Any doubt about likelihood of confusion must be resolved in favor of the prior registrant (TMEP 1207.01(d)(i)), so a response has to do more than show the question is debatable.
• The kind of third-party evidence. Use-based third-party registrations can carry some weight, but registrations under Section 66(a) or Section 44(e) with no declaration of continued use have very little, if any (TMEP 1207.01(d)(iii)).
• The cited registration's age and upkeep. A registration past its fifth anniversary can be cancelled only on the limited grounds in 15 U.S.C. 1064(3), and a missed maintenance filing may clear it from the register; our page on trademark maintenance deadlines and fees shows when those filings fall due.
• Several cited registrations. If the cited marks belong to different owners, the examiner must cite each one that bars registration, but should consider whether that dilution points away from confusion (TMEP 1207.01(d)(x)).
• A Madrid-based application. Under Section 66(a), the response period is six months with no extension (37 CFR 2.62(a)(1)(ii)). Our page on the Madrid Protocol explains how those filings work.
• Whether the cited owner still uses the mark. If not, cancellation, expungement or reexamination may open up; our page on losing a trademark through nonuse explains abandonment.

A worked example

Common mistakes

• Arguing that your business is different in practice when the written descriptions overlap. The comparison is based on the goods and services as written (TMEP 1207.01(a)(iii)).
• Relying on the absence of actual confusion. The test is likelihood of confusion, and actual confusion does not have to be shown (TMEP 1207.01(d)(ii)).
• Citing Madrid or Section 44 third-party registrations with no declaration of continued use on file, which the manual says have very little, if any, weight (TMEP 1207.01(d)(iii)).
• Submitting a one-line consent from the registrant. A bare consent carries less weight than a detailed agreement (TMEP 1207.01(d)(viii)).
• Filing only a request for reconsideration after a final refusal. It does not stay the time to appeal (37 CFR 2.63(b)(3)), and the USPTO notes that applicants often file both.
• Emailing the response to the examining attorney. Responses must go through TEAS; an emailed response gets no date of receipt (37 CFR 2.62(c)).

What to do this week

1. Calendar the response deadline printed in the office action and plan to file early; the USPTO notes that TEAS maintenance can affect a last-minute filing.
2. Pull every cited registration in TSDR and note its owner, goods, filing basis, registration date and maintenance status.
3. Put your description of goods or services next to each cited one and mark the items you could delete without hurting your business.
4. Collect evidence on the factors that favor you, such as use-based third-party registrations for similar marks and proof of how your buyers purchase.
5. Check the rest of the office action for other refusals or requirements, because a response must address all of them.
6. If you need more time and the application is not a Madrid filing, file the $125 extension through TEAS on or before the deadline.

Frequently asked questions

Can you call or email the examining attorney?

For minor issues, the USPTO says an examining attorney may suggest a call or email. Any email becomes part of the public application record. A full written response to a refusal still goes through TEAS (37 CFR 2.62(c)).

Does a Section 2(d) refusal mean you are infringing?

No. An office action decides only whether your mark can be registered. Whether a use infringes is a question for the federal courts, which hear actions under the Trademark Act (15 U.S.C. 1121); our page on trademark lawsuits in Atlanta federal court explains that process.

Do you get the filing fee back if the refusal cannot be overcome?

No. The USPTO says that when an application is abandoned, the application fees are not refunded and the trademark will not register.

Should you just file a new application with a narrower description?

Sometimes, but a new application carries a new filing date, and the filing date is what gives a registered mark its nationwide priority (15 U.S.C. 1057(c)). Amending the pending application keeps the original date, which is one reason to try narrowing in a response first.

What if the office action also refuses the specimen?

Every refusal and requirement has to be resolved before the mark can register, so the response must answer both. Our page on what to do when the USPTO refuses a specimen covers that refusal.

Once the refusal is withdrawn, is the mark safe?

Not yet. The mark is then published, and anyone who believes they would be damaged, including the cited registrant, has 30 days to oppose or ask for more time (15 U.S.C. 1063(a)). Our page on what happens in a TTAB opposition explains that stage.

Zala IP Law helps applicants across the United States and internationally overcome office actions, including Section 2(d) refusals. If you have received one, request a consultation or call 404-313-1701 and have the serial number and the issue date ready. Our trademark registration FAQ answers more general questions about the process.